Trademarks

Basic Information  |  Enforcement  |  Documents Needed to File Trademark Application

Basic Information

Types of Marks
Trademarks, service marks, collective marks and certification marks are protected under the Trademark Law. Geographical indications can be protected as certification or collective marks.

What Can Be a Trademark
Words, devices, letters, numerals, three-dimensional devices and combination of colors, and combinations of the aforementioned elements, can be filed as trademarks.

Term of Trademark Registration
A registration is valid for ten years, from the date of registration, and can be renewed indefinitely, each time for ten years.

Classification System
China is a member of the Nice Agreement and follows the International Classification of Goods and Services.

What Can Not Be Used as a Trademark (Absolute Grounds for Refusal)

1. those identical with or similar to the state name, national flag, national emblem, military flag or
   medals of the People's Republic of China, as well as those identical with or similar to the name of the specific location and/or the name and design of the symbolic buildings of the Central Government;
2. those identical with or similar to the state name, national flag, national emblem, military flag of a foreign country, unless otherwise authorized by the Government of the said country;
3. those identical with or similar to the name, flag and insignia of inter-governmental international organizations, unless otherwise authorized by the said organizations or unlikely to mislead the public;
4. those identical with or similar to the indication of control or warranty of official sign or hallmark, unless otherwise authorized;
5. those identical with or similar to the symbol or name of the Red Cross or the Red Crescent;
6. those having the nature of discrimination against any nationality;
7. those having the nature of exaggeration or deceit;
8. those detrimental to socialist morality or having other unhealthy influence.
9. names of Chinese administrative divisions at or above the county level or foreign geographical names well-known to the public. But such geographical names which have other meanings or are the component parts of the collective marks or certification marks shall be exceptional.

What Can Not be Registered as a Trademark (Absolute Grounds for Refusal)

-those solely consist of the generic name, design or model number of the related goods;
-those solely and directly refer to the quality, main material, function, use, weight, quantity or other characteristics of the related goods;
-those devoid of any distinctive characters;
-where a three-dimensional device consists exclusively of the shape which results from the nature of the goods themselves, the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods.

Examination
Formality examination. It includes formality matters, such as applicant's name and address, power of attorney, etc., but the most important part of this examination is specification or classification of the goods/ services. Only when the goods/services are acceptably specified or correctly classified the Trademark Office will start substantive examination of the application.
Substantive Examination. At this stage the examiner will decide whether the application should be refused on one or more of the absolute grounds, he will also search for prior registrations or applications. The examiner can refuse an application on the ground of prior rights ex officio, and in most cases a letter of consent is not acceptable.

Provisional Refusal
The Trade Mark Office may provisionally refuse an application if, after examination, the mark is considered to fall into the circumstances of the absolute grounds for refusal, or, identical with or similar to an earlier mark. The applicant can appeal the decision of refusal with the Trademark Review and Adjudication Board (TRAB), within a term of 15 days. It is important to make a quick decision, because no extension of time is allowed.

Publication
Applications that have passed examination will be published in the Trademark Gazette for opposition purpose. If everything goes on smoothly, an application shall be published 12 months from the date of filing.

Term for Opposition
The term for opposition is three months, starting from the date of publication.

Dispute
If one misses the opposition term, he can file a dispute against a registered trademark within five years after its registration. A dispute can be filed on the basis of a prior registration or an application for identical or similar goods, or on the ground that the disputed registration is obtained in bad faith, or should not have been granted because of violation of Art. 11 of the Trade Mark Law (absolute grounds for refusal).

Appealability of Decisions
Decisions of the Trade Mark Office can be appealed with the Trademark Review and Adjudication Board (TRAB), whose decision can be further appealed to the court.

The Scope of Protection
A trademark is protected in respect of the goods or services registered. If extended goods or services are desired, a new application should be filed.

International Registrations
China is a member of both the Madrid Agreement and Madrid Protocol, therefore international registrations can designate China. The international registrations will be examined by the Trademark Office according to national law.

Recordation of Trademark License Agreements
It is compulsory to have a trademark license agreement recorded within three months from the date of execution.

Use Requirement
A trademark registration is subject to cancellation if not used for three consecutive years. Use of a trademark includes use on goods, packages or containers, or in trading documents, advertising, exhibition or other business activities. It is not clear whether use on the Internet will be considered valid use.

Marking
Marking is not compulsory, but, naturally, recommended.

Protection of Unregistered Trademarks
An unregistered trademark is generally not protected, unless is qualifies as a well-known mar.

Chinese Version of Trademarks
It is important to register the Chinese version of a trademark when such a version is used, or, even if not used, the Latin mark has de facto obtained its Chinese version accepted by consumers to refer to the Latin mark, particularly if the mark is coined.